Managing Patent Prosecution

• Author: Elizabeth Rodriguez - Sean Solberg
• Pages: 33-64

John Ritter and Sean D. Solberg1

The vast majority of all new information created by researchers at universities is trans-

ferred to the public via a publication or through the education of students. However, some

technologies may also be effectively brought to the public through the process of technol-

ogy transfer. Technology transfer, broadly dened, is the process of transferring scientic

ndings from a university to a commercial entity for the purpose of further development

and commercialization. This transfer is typically accomplished through an intellectual

property license, usually involving a patent.

The Bayh-Dole Act of 1980 expressly mandated the responsibility to transfer the results

of federally funded basic research to universities so that the public can benet.2 As part

of their efforts to fulll this obligation, U.S. universities led over 22,000 patent applica-

tions in scal year 2012.3 These patent applications were led with the express purpose

of trying to attract a potential licensor or investor to develop the nascent technology.

Finding licensees and investors willing to take the necessary risk and investment is

difcult, and it is therefore critical to have a sound patent strategy for each invention to

create valuable intellectual property. This chapter will give an overview of possible uni-

versity strategies for patent application selection and the pros and cons of these different

approaches. The authors will also utilize the results of a nonscientic survey conducted

1. John Ritter is Director of the Ofce of Technology Licensing at Princeton University. Sean D. Solberg is

Special Counsel with Davis Brown Law Firm. This chapter reects the personal views and thoughts of Ritter

and Solberg and is not to be construed as representing in any way the views or advice of Princeton University

or Davis Brown Law Firm. The content is solely for purposes of discussion and illustration, and is not to be

considered legal advice.

2. Pub. L. No. 96-517. The Patent and Trademark Act of 1980 and amendments included in Pub. L. No.

98-620 (1984).

3. Association of University Technology Managers Statistics Access for Tech Transfer database.

33

Chapter 2

Managing Patent Prosecution

Strategic Application Selection

among 22 private and public universities across the country to provide context in address-

ing the unique issues considered by universities when choosing an appropriate patent

application selection strategy.

I. Worldwide Strategy: Generally

This section will examine some of the factors that should be considered when developing

an overall foreign patent strategy. University technology licensing ofcers (TLOs) are con-

stantly faced with decisions about whether to le foreign applications or le solely in the

United States. Unlike most Fortune 500 companies, university technology transfer ofces

(TTOs) have limited prosecution budgets that add an additional level of complexity to

these ling decisions. Further, in cases where it is decided to pursue worldwide protection,

the TLO may also need to consider various strategies for the Patent Cooperation Treaty

(PCT) ling that present issues unique to TTOs as compared with for-prot corporations.

The commercial importance of worldwide patent protection for universities is obvi-

ous. The marketplace for goods and services is increasingly becoming global, and early

strategic decisions about worldwide patenting can have a profound impact on the abil-

ity to license an invention, as well as its value in a licensing transaction. These decisions

about worldwide patent protection therefore require careful thought by the TLO on a

case-by-case basis to maximize the probability of having a license result in a commercial

product that benets the public.

Regardless of a TTO’s eventual worldwide patent strategy, the ling of a U.S. patent

application is the typical rst step in the process of protecting a new invention resulting

from basic research being performed at a university. This U.S. application may be a regu-

lar utility application or a provisional application. A full discussion on the advantages

and disadvantages of provisional versus regular utility lings follow later in this chapter.

Regardless, a PCT application can claim priority to either a provisional or non-provisional

application. Once the initial U.S. application is led, applications led outside the United

States (OUS), including any PCT lings, must thereafter be led within one year of the

priority date of the earliest-led application.

The TLO has two options for OUS protection: a PCT application followed by a national

stage application in each country of interest or an application led directly in each of

those countries. Given the high costs of foreign lings (each separate OUS application

generally costs between $4,000 and $15,000 for foreign agents to prepare, translate, and

le), a TTO is forced to be very cautious and thoughtful about foreign patent protection,

especially if the technology is not already licensed. In this context, the direct route (ling

an application directly in a country with a priority claim to the parent U.S. application)

JOHN RITTER AND SEAN D. SOLBERG34

is unusual in the university environment, because a PCT application provides far more

exibility before incurring the substantial costs of national phase lings.

In light of the reduced costs and exibility, TTOs typically initially pursue patent protec-

tion outside the United States via the PCT application. In the standard scenario described

above, the U.S. application is led rst, and then the PCT application is led on or before

the one-year anniversary of the U.S. ling. The primary advantage of a PCT application

is that it allows an applicant to preserve its rights in any or all member countries through

the ling of one application.

Subsequently, a national phase application must be led in the patent ofce of each

member country of interest to the applicant. More specically, the national phase applica-

tions must be led within 30 months (31 in some countries) from the date of the original

priority ling. A PCT application therefore provides an opportunity to delay the substan-

tial costs associated with national phase lings for up to 30 months or more, while at the

same time allowing the applicant additional time to gather further information about the

patentability of the technology as well as the market demand for the claimed invention.

The exibility of the PCT application also gives the TTO options for its overall foreign

patenting strategy. For example, in some circumstances, it is worth considering whether

to forego ling a corresponding application directly in the United States and instead le a

PCT application only, naming the United States as a designated country. Most commonly

this is done to reduce the overall costs compared with ling the U.S. and PCT applications

separately. However, even if cost were not a factor, it is worth considering the combined

ling, as there are other advantages to the university TLO in doing so.

For example, a PCT application is usually afforded a more comprehensive search than

a U.S. application, whether or not the search is performed by the European Patent Ofce

(EPO) or the U.S. Patent and Trademark Ofce (USPTO). Moreover, the PCT examina-

tion process is faster: the search is provided with a written opinion and must be submitted

to the applicant within 16 months of the date of ling. In fact, they are often provided

within 12 months of ling.

The PCT written opinion, if favorable, could be useful in assisting the TLO in attracting

venture funding or nding a licensee. Moreover, if you are looking for a patent to issue

more quickly, ling a PCT rst may help to expedite the allowance process, as explained

in detail below with respect to the Patent Prosecution Highway (PPH).

The most obvious disadvantage is that the PCT must be led within one year of the

earliest-led priority application. Of course, this is the same disadvantage for all OUS pro-

tection. The dilemma for a TLO is that the commercial viability of an embryonic university

technology is usually not known at that point in the process. The TLO must therefore pay

the increased costs of ling the PCT without knowing the technology’s chances of com-

mercial success or lose all foreign rights to the invention. This must be weighed against

35MANAGING PATENT PROSECUTION